JC Franchising Group, LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: August 1, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re JC Franchising Group, LLC
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Serial No. 87338400
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Marina F. Cunningham of McCormick, Paulding & Huber, LLP,
for JC Franchising Group, LLC.

Thomas Young, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.

_____

Before Zervas, Larkin, and Dunn,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

JC Franchising Group, LLC (“Applicant”) seeks registration on the Principal

Register of the proposed mark WHAT’S IN YOUR AIR? in standard characters for

“inspecting buildings for the existence of mold; indoor air quality testing services,” in

International Class 42.1

1 Applicant is the owner by assignment of Application Serial No. 87338400, which was filed
on February 16, 2017 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on
the original applicant’s claimed first use of the mark and first use of the mark in commerce
since at least as early as September 20, 2015.
Serial No. 87338400

The Trademark Examining Attorney originally refused registration based on

likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),

and made that refusal final.2 Applicant appealed and requested reconsideration. 4

TTABVUE.3 The Board instituted the appeal and remanded the application to the

Examining Attorney for consideration of the reconsideration request. Following

remand, the Examining Attorney withdrew the Section 2(d) refusal, but issued a new

refusal under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1053,

1127, on the ground that the proposed mark fails to function as a mark for the services

identified in the application.4 Following Applicant’s response to the new failure-to-

function refusal,5 the Examining Attorney made that refusal final,6 and the appeal

was resumed on that issue alone.

The appeal is fully briefed. We affirm the refusal to register.

2November 17, 2017 Final Office Action at 1. All citations in this opinion to the application
record are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of the
United States Patent and Trademark Office (“USPTO”).
3 Citations in this opinion to the briefs and the reconsideration request refer to TTABVUE,
the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6
(TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
number, and any numbers following TTABVUE refer to the page number(s) of the docket
entry where the cited materials appear.
4 May 24, 2018 Office Action at TSDR 1.
5 November 26, 2018 Response to Office Action.
6 November 28, 2018 Final Office Action at TSDR 1.

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Serial No. 87338400

I. Record on Appeal7

The record on appeal includes Applicant’s specimen of use, webpages of providers

of air quality-related goods and services that display the phrase “What’s in your air?”

or a variant, made of record by the Examining Attorney,8 and registrations of marks

sharing the format “What’s in Your _____?,” made of record by Applicant.9

II. Failure to Function Refusal

A. Applicable Law

“‘[A] proposed trademark is registrable only if it functions as an identifier of the

source of the applicant’s goods or services.’” In re Yarnell Ice Cream, LLC, 2019

USPQ2d 265039, *16 (TTAB 2019) (quoting In re DePorter, 129 USPQ2d 1298, 1299

(TTAB 2019)). “‘The Trademark Act is not an act to register mere words, but rather

to register trademarks. Before there can be registration, there must be a trademark,

and unless words have been so used they cannot qualify.’” Id. (quoting DePorter, 129

USPQ2d at 1299 (quoting In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA

1976)). “There are multiple reasons why a proposed mark may fail to function as one.”

Id. (citing TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 1202

(Oct. 2018)). Here, the Examining Attorney “invokes the line of cases holding that

7Some of the evidence in the record was directed to the Section 2(d) refusal that was
withdrawn following remand. We do not list or discuss that evidence.
8May 24, 2018 Office Action at TSDR 2-28; November 28, 2018 Final Office Action at TSDR
2-50.
9 November 26, 2018 Response to Final Office Action at TSDR 8-229. By assignment,
Applicant owns one of these registrations, Registration No. 5285214 for the mark WHAT’S
IN YOUR AIR? for “providing training courses in the field of home inspection.” Id. at TSDR
16-19.

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Serial No. 87338400

‘terms and expressions that merely convey an informational message are not

registrable.’” Id. (quoting DePorter, 129 USPQ2d at 1299).

Under these cases, “[s]logans and other items that are considered to be merely

informational in nature, or to be common laudatory phrases or statements that would

ordinarily be used in business or in the particular trade or industry, are not

registrable.” In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (affirming

refusal to register “Once a Marine, Always a Marine” for clothing because it would be

perceived as an informational slogan “to express support, admiration or affiliation

with the Marines”). See also D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710,

1716 (TTAB 2016) (sustaining opposition to registration of I ? DC for clothing because

it would be perceived as “an expression of enthusiasm, affection or affiliation with

respect to the city of Washington, D.C.”); In re Volvo Cars of N. Am., Inc., 46 USPQ2d

1455, 1460-61 (TTAB 1998) (affirming refusal to register “Drive Safely” for

automobiles because it would be perceived as an everyday, commonplace safety

admonition).

“The critical inquiry in determining whether a designation functions as a mark is

how the designation would be perceived by the relevant public.” Eagle Crest, 96

USPQ2d at 1229. “To make this determination we look to the specimens and other

evidence of record showing how the designation is actually used in the marketplace.”

Id. “The more commonly a phrase is used, the less likely that the public will use it to

identify only one source and the less likely that it will be recognized by purchasers as

a trademark.” Id.

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Serial No. 87338400

B. The Examining Attorney’s and Applicant’s Arguments

1. Examining Attorney

The Examining Attorney argues that because Applicant’s proposed mark “is a

common phrase used in the field of air purification and air quality testing, consumers

will not perceive the applied-for mark as a service mark that indicates the source of

the applicant’s services and identifies and distinguishes its services from others.” 9

TTABVUE 4. He cites third-party uses of the question “What’s in Your Air?,” or a

variant, which he argues demonstrate “that there is widespread use of the phrase

‘WHAT’S IN YOUR AIR?’ in the field of air quality to promote air quality purification

products and services and convey a particular message to consumers” that they

“should consider the safety and purity of the air one breathes and the need for air

quality testing.” Id. at 7. He also notes Applicant’s use of the proposed mark on

Applicant’s specimen, which he argues “is nearly identical to how other businesses

providing the same and similar goods and services use the phrase,” and “reinforces

the conclusion that the applied-for mark would not be perceived as a service mark.”

Id. at 9.

We reproduce below the pertinent portions of a representative sample of the third-

party webpages, and Applicant’s specimen of use, that are relied on by the Examining

Attorney:

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Serial No. 87338400

(a) Third-Party Webpages

10

11

10 May 24, 2018 Office Action at TSDR 5.
11 Id. at TSDR 8.

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Serial No. 87338400

12

13

14

12 Id. at TSDR 14.
13 Id. at TSDR 20.
14 Id. at TSDR 21.

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Serial No. 87338400

15

16

15 November 28, 2018 Final Office Action at TSDR 5.
16 Id. at TSDR 8.

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Serial No. 87338400

17

18

17 Id. at TSDR 10.
18 Id. at TSDR 33.

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Serial No. 87338400

19

(b) Applicant’s Specimen

20

19 Id. at TSDR 37.
20 February 16, 2017 Specimen of Use.

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Serial No. 87338400

2. Applicant

Applicant argues that its proposed “mark is not merely informational as it does

not merely convey general information about the goods or services, nor is it a widely

used or commonplace message used in ordinary language such that consumers will

not perceive the wording as an indicator of source for the Applicant’s services.” 7

TTABVUE 12. Applicant cites examples of terms that have been found not to function

as marks because they convey information about specific matters, id. at 13,21 and

argues that unlike these terms, WHAT’S IN YOUR AIR? “does not merely convey

general information about the characteristics, features or qualities of the applied-for

services, e.g., the environmentally friendly nature, certification processes, costs, or

other characteristics of features of Applicant’s services.” Id. Applicant claims that the

proposed mark “does not merely convey information, rather [it] is presented in the

form of a question asking consumers to consider or ponder what is in their air.” Id. at

14.22

21Applicant cites In re T.S. Designs, Inc., 95 USPQ2d 1669 (TTAB 2010) (CLOTHING FACTS
for shirts); In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (AOP for wine); In re Schwauss,
217 USPQ 361 (TTAB 1983) (FRAGILE for labels and bumper stickers); In re Aerospace
Optics, Inc., 78 USPQ2d 1861 (TTAB 2006) (SPECTURM for pushbutton switches); In re
Melville Corp., 228 USPQ 970 (TTAB 1986) (BRAND NAMES FOR LESS for retail clothing
store services); and In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)
(THE BEST BEER IN AMERICA for beer and ale).
22 Applicant argues that failure-to-function refusals “‘may be grounded in concerns and
analysis similar to those underlying descriptiveness refusals under Section 2(e)(1)’” of the
Trademark Act. 7 TTABVUE 14 (quoting Trademark Examination Guide 2-17 Merely
Informational Matter (July 2017)). The Board recently held that evidence of mere
descriptiveness may support a finding that a proposed mark also fails to function as a mark
because it describes properties of the goods or services. Yarnell Ice Cream, 2019 USPQ2d
265039, *17-18.

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Serial No. 87338400

Applicant argues that “the ‘commonplace’ category is intended to encompass

expressions, such as DRIVE SAFELY, which have become so commonly used in

ordinary language that consumers will not perceive the wording as an indicator of

source for the goods or services.” Id.23 Applicant argues that its proposed mark is

unlike these phrases because it “simply does not rise to the level of a commonly used

expression.” Id. at 15. Applicant criticizes the Examining Attorney’s evidence of third-

party uses of “What’s in Your Air?” because most of them “do not use the wording

‘WHAT’S IN YOUR AIR?’ in connection with the services at issue, namely, ‘Inspecting

buildings for the existence of mold; Indoor [air] quality testing services.” Id. Applicant

acknowledges that three of the websites “arguably use the wording ‘WHAT’S IN

YOUR AIR?’ in connection with some of the services at issue,” but argues that “these

relatively few occurrences are not enough to support a finding that Applicant’s mark

‘WHAT’S IN YOUR AIR?’ is a common expression commonly used in connection with

the services at issue.’” Id. at 19-20 (citing November 28, 2018 Final Office Action at

TSDR 1); 10 TTABVUE 5-8.

With respect to its own use of WHAT’S IN YOUR AIR?, Applicant argues that the

proposed mark “‘is used, alone, as a slogan in the advertisement of applicant’s

services,’” 7 TTABVUE 21 (quoting In re C.R. Anthony Co., 3 USPQ2d 1894, 1895

23Applicant cites In re Manco, 24 USPQ2d 1938 (TTAB 1987) (THINK GREEN and design
for paper goods and weatherstripping); In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB
1987) (PROUDLY MADE IN USA for electric shavers and parts); America Online, Inc. v.
AT&T Corp., 243 F.3d 812, 57 USPQ2d 1902 (4th Cir. 2001) (YOU HAVE MAIL for computer
services); and Cosmetically Sealed Indus. Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28,
43 USPQ2d 1956 (2d Cir. 1997) (SEAL IT WITH A KISS for lip gloss).

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Serial No. 87338400

(TTAB 1987)), and “appears prominently, in font that is significantly larger than any

other wording or trade name appearing on the specimen, and is located in the center

of the specimen.” Id.

Finally, Applicant argues that “there are at least fifty (50) other trademarks /

service marks having a similar format as Applicant’s mark that have been granted

registration.” Id. According to Applicant, these marks, “like Applicant’s mark, all

share the common format, ‘What’s in Your _____?’ and ask consumers to consider or

question what is in the thing identified by the blank.” Id. Applicant argues that

“[c]onsumers have been exposed to numerous marks in the format ‘WHAT’S IN YOUR

_____?’ and readily recognize these types of marks as identifying the source of the

respective goods / services rather than as merely conveying informational matter.”

Id. at 23.24 Applicant further argues that because it “is the owner of U.S. Registration

No. 5,285,214 . . . for the identical mark to that of the present application, i.e.,

‘WHAT’S IN YOUR AIR?’ and which was not found to fail to function as a mark,”

Applicant’s “present application should be allowed to proceed to registration.” Id.

Applicant claims that “the sheer number of marks that have been granted

registration makes it difficult to view the present refusal as anything but arbitrary

and inconsistent.” Id. Applicant concludes that “[a]lthough an examining attorney

may not be bound by decisions of other examining attorneys in prior cases, it is

necessary that there is some sense of consistency in the examination of trademark

24 Applicant provides a table of 11 such marks. 7 TTABVUE 22-23.

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Serial No. 87338400

applications,” and that “there is no consistency where these marks were allowed while

Applicant’s mark is refused registration.” Id.

C. Analysis of Refusal

We will begin our analysis where Applicant’s argument ends. “While we recognize

that ‘consistency is highly desirable,’ consistency in examination is not itself a

substantive rule of trademark law, and a desire for consistency with the decisions of

prior examining attorneys must yield to proper determinations under the Trademark

Act and rules.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB

2018) (quoting In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir.

2007)). We “must assess each mark on its own facts and record.” Id.

Accordingly, the fact that the USPTO has registered other “WHAT’S IN YOUR

_____?” formative marks for different goods and services does not entitle Applicant to

a registration of WHAT’S IN YOUR AIR? for “inspecting buildings for the existence

of mold; indoor air quality testing services,” the services identified in the instant

application. Nor does the fact that the USPTO has registered WHAT’S IN YOUR

AIR? for the different service of “providing training courses in the field of home

inspection.”25 The USPTO “is required to examine all trademark applications for

compliance with each and every eligibility requirement,” In re Cordua Rests., Inc.,

823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016), and we must determine

whether the USPTO properly refused registration of the proposed mark WHAT’S IN

YOUR AIR? for the services in this application on the basis of the record here.

25 November 26, 2018 Response to Office Action at TSDR 16-19.

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Serial No. 87338400

In assessing “the commercial impression [the proposed mark] makes on the

relevant public (e.g., whether the term sought to be registered would be perceived as

a mark identifying the source of the services,” In re Keep a Breast Found., 123

USPQ2d 1869, 1879 (TTAB 2017), we “look to the specimens and other evidence of

record showing how the designation is actually used in the marketplace.” Eagle Crest,

96 USPQ2d at 1229. We begin with Applicant’s specimen, which we reproduce again

below for ease of reference in following our analysis:

26

“The mere fact that a designation appears on the specimen of record does not make

it a trademark.” Aerospace Optics, 78 USPQ2d at 1862. Similarly, the “fact that words

are prominently displayed does not in and of itself make them registrable.” In re

Wakefern Food Corp., 222 USPQ 76, 77 (TTAB 1984). “To be a mark, [a] term must

26 February 16, 2017 Specimen of Use.

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Serial No. 87338400

be used in a manner calculated to project to purchasers or potential purchasers a

single source of origin for the goods [or services].” Aerospace Optics, 78 USPQ2d at

1862.

On its specimen, Applicant uses the question “What’s in Your Air?” to elicit

information, in the form of more questions (“Mold? Pollen? Pet Dander? Allergens?”),

about the types of contaminants that may be in “Your Air.” The specimen provides

information in the form of answers to the question “What’s in Your Air?” instead of

using the question to identify Applicant as the source of those answers, as two of the

third-party webpages in the record use the question:

27

27May 24, 2018 Office Action at TSDR 3. Our reference to these webpages should not be
construed as manifesting our view that they use the question “What’s in Your Air?” as a
service mark. We note them to illustrate that Applicant uses “What’s in Your Air?” solely to
provide information about various types of airborne contaminants.

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Serial No. 87338400

28

Applicant’s specimen uses the question “What’s in Your Air”? to provide information

identifying specific possible airborne contaminants about which home owners should

be concerned. Applicant refers to three of the four contaminants identified in response

to the question “What’s in Your Air?” in stating that “[i]f you are concerned about

mold, pet dander, and pollen in your home, request testing from one of our

professional testers in your area.”

To identify the source of Applicant’s testing services, Applicant’s specimen uses

the mark , which appears on the webpage’s masthead and on the shirt

of a person who appears to be “one of our professional testers.” It is settled that “an

advertisement or similar material can bear more than one mark without diminishing

the identifying function of each,” In re Morganroth, 208 USPQ 284, 287 (TTAB 1980),

28Id. at TSDR 11.

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Serial No. 87338400

but the “salient question is whether the designation in question, as used, will be

recognized in itself as an indication of origin for the particular . . . service.” Id. The

answer here is no. Applicant uses the question “What’s in Your Air?” on the specimen

simply as language, not as branding. The question (coupled with the answers that it

elicits) tells viewers why they should use “indoor air quality testing services” and

what the tester may find, but not who the tester is.

As discussed and shown above, the record contains a number of examples of

similar use of the question “What’s in your air?” or a close variant in connection with

air quality-related goods and services. Applicant’s several critiques of this evidence

are not persuasive. The “more commonly a phrase is used, the less likely that the

public will use it to identify only one source and the less likely that it will be

recognized by purchasers as a trademark,” Eagle Crest, 96 USPQ2d at 1229, but

contrary to Applicant’s suggestion, 7 TTABVUE 14-20; 10 TTABVUE 5-8, there is no

minimum number of third-party uses required to show that a proposed mark is

informational in nature and is not likely to be perceived as a trademark. Keep a Breast

Found., 123 USPQ2d at 1879-80 (relying principally on the applicant’s specimens of

use to determine that the applied-for mark failed to function as a service mark for

the identified services). The number of third-party uses in the record here is sufficient

to corroborate the conclusion based on Applicant’s specimen that WHAT’S IN YOUR

AIR? would not be viewed as a service mark when used by Applicant for the services

identified in the involved application.

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Serial No. 87338400

In addition, and again contrary to Applicant’s suggestion, 7 TTABVUE 14-20; 10

TTABVUE 5-8, the third-party uses need not be for the exact services for which

Applicant seeks registration to be probative of how WHAT’S IN YOUR AIR? would

be perceived by consumers of Applicant’s services. Indeed, third-party uses of a term

do not even need to be in connection with goods or services per se to be probative of

the non-trademark nature of the term. DePorter, 129 USPQ2d at 1302 (uses of term

#MAGICNUMBER108 in social media supported finding that term did not function

as a trademark for various clothing items); Manco, 24 USPQ2d at 1939-42 (uses of

term THINK GREEN in news articles supported finding that term did not function

as a trademark for a variety of paper goods and weatherstripping). The third-party

uses of “What’s in Your Air?” for the various air-quality related goods and services as

they are described by Applicant itself, 7 TTABVUE 14-20; 10 TTABVUE 5-8,29 are

probative of how consumers would understand WHAT’S IN YOUR AIR when used by

Applicant for “inspecting buildings for the existence of mold” and “indoor air quality

testing services.” The third-party uses reinforce the informational, non-source

identifying nature of the question “What’s in Your Air?” as it appears on Applicant’s

website. The proposed mark WHAT’S IN YOUR AIR? “fails to function as a mark not

only because of the informational nature of the term, but also because of the way it

appears on the specimen.” Aerospace Optics, 78 USPQ2d at 1864.

29These include mechanical and electronic air filter products, a webinar regarding airborne
contaminants, a contaminant filter product, air monitoring pods, filters and UV air purifiers,
a rental air sampling machine, air duct cleaning services, an air purification system, air
testing kits, air quality testing services, and laboratory services. They all use the answers to
the question “What’s in Your Air?” to promote the sale of goods and services to improve air
quality offered under various marks.

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Serial No. 87338400

Decision: The refusal to register is affirmed.

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